Background
A Peruvian citizen has managed to register the trademark “Hylton” before Indecopi (Resolution N. 0622-2019/TPI-INDECOPI), despite the opposition filed by the Hilton Hotel chain. The chain argued that the name could cause confusion in the market, since its own trademark was in the process of registration.
The trademark registered by this Peruvian entrepreneur is dedicated to the commercialization of scientific and navigation instruments, among other products, which are clearly different from the services offered by Hilton. This fact was key for the resolution of the case.
Arguments of the case
Hilton Hotel’s Opposition
Hilton argued that the trademarks “Hylton” and “Hilton” were sufficiently similar to cause confusion among consumers. The hotel chain indicated that it already owned the name “Hilton” in Colombia and Ecuador in classes 35 and 43 of the International Classification:
- Class 35: Advertising, management and administration of commercial businesses.
- Class 43: Catering and temporary accommodation services.
Hilton also argued that its application for class 35 was pending in Peru when “Hylton” was registered.
Defense of “Hylton”
The Peruvian businessman argued that he already had the registration of the trademark “HYLTON PROVEIND” and that “Hylton” was derived from this earlier trademark. The Hilton Hotels chain argued that the prior registration of the entrepreneur had no relevance and that each new application should be evaluated independently.
Indecopi Evaluation: Case N. 740947-2018/DS
First Instance
Indecopi dismissed Hilton’s opposition and confirmed the registration of “Hylton”. Although it recognized that the trademarks were graphically and phonetically similar, it decided that the difference in the goods and services offered eliminated the likelihood of confusion.
Second Instance
Hilton Hotels challenged the first instance decision, arguing that the assessment was insufficient and that it could cause significant confusion to consumers regarding its mark, and highlighted the possible interrelationship between the technology products and hospitality services.
Response from “Hylton”.
The business owner of this mark highlighted that the “Hylton” logo included additional graphic elements that differentiated its mark from the Hilton Hotels chain. Although the pronunciation of both trademarks is similar, this was not considered sufficient to modify the decision.
Final Decision
By Resolution N. 0622-2019/TPI-INDECOPI Indecopi ratifies its decision to allow “Hylton” and “Hilton” to coexist in the market, considering that there was not enough similarity between the trademarks to justify confusion among consumers. This decision of Indecopi underlines that, although there are similarities in the pronunciation of “Hylton” and “Hilton”, these are not enough to cause significant confusion among consumers. The coexistence of both trademarks in the market is not considered a problem, since there is no direct link or significant crossover between the goods and services of each trademark that could mislead the public.
Conclusion
This decision highlighted the importance of evaluating cases objectively in order to determine that similarities between trademarks are not only determined on the basis of terms of appearance, but also in the context of their respective markets and services.
Source: Resolución 0622